On October 12, 2017, Oppendahl
reported in his blog entitled Ant-like Persistence that [t]he majority
of US trademark registrations lack incontestable status, because the owner of
the registration has not filed Section 15 papers at the USPTO. A byproduct of
this revelation is that the reason Section 15 papers were not filed is because
the registration owner did not even know there was such a thing called a
Section 15 affidavit/declaration to achieve something called incontestability.
This article attempts to educated readers on Section 15
affidavits/declarations.

Burdens of Proof in a Lawsuit

As a prefatory point, many lawsuits are won/lost
based on the burdens of proof. Who must prove what, by how much evidence and at
what point in an analysis can make the difference in whether plaintiff or
defendant prevails in a lawsuit. Some plaintiffs lose meritorious claims
because they were stymied in gathering evidence. On the hand, other plaintiffs
skate by because they did not bear a burden of production.

Rebuttable Presumptions Arising Out of a
Registration that is Not Incontestable

A newly issued Federal Trademark Registration
carries with it rebuttable presumptions (or also referred to as evidentiary
presumptions effecting the burden of going forward (explained below.)) Two key
rebuttable presumptions are that the registered mark is owned by the
registration owner and that the mark is valid. These rebuttable presumptions
(or presumptions effecting the burden of going forward) effectively mean that a
trademark infringement plaintiff is relieved from making out a prima facea case of ownership and validity by simply
introducing the registration certificate.

Thus, after a plaintiff introduces a registration
(not made incontestable, as discussed below,) defendant is put in the
precarious position of having to introduce proof sufficient to rebut the
presumptions of ownership and validity. The practical reality in US courts is
that the judge gets to decide how much evidence a defendant must introduce to
rebut the presumption. The law is not uniform and there is decisional authority
holding that a judge must afford the presumption substantial weight. If
defendant cannot rebut the presumption, plaintiff wins on these two issues with
the introduction of no more evidence than its registration.

If defendant introduces evidence that is sufficient
to rebut a presumption, the ultimate burden of production, or simply called the
burden of proof, always remained with plaintiff to establish ownership and
validity by a preponderance of the evidence. That is, upon defendant
introducing sufficient evidence to rebut a presumption of ownership and/or
validity, the presumption disappears as if it never existed. The totality of
the evidence introduce by plaintiff and defendant must preponderate (weigh 51%
or more) in favor of plaintiff on ownership and validity for plaintiff to make
out a claim. In more detail, if the evidence weighs 51% or more in favor of
plaintiff on an issue, then plaintiff wins on that issue. Otherwise, the
defendant wins on the issue.

In sum, without a registration and the presumptions
carried by a registration, a trademark infringement plaintiff would carry both
a burden of going forward and a burden of production to establish ownership and
validity. The presumption flowing from a registration allows a plaintiff to
satisfy burden of going forward by merely introducing the registrations; but,
if a defendant rebuts the presumption, the burden of production/proof comes
into play for plaintiff to establish ownership and validity by preponderance of
evidence.

Irrebuttable Presumptions Arising Out of
a Registration that is Incontestable

With
the foregoing elaborate background in mind, the gravamen of incontestability
can be understood. There is a Federal statute that upon the satisfaction of
certain conditions allows for these rebuttable presumptions on ownership and
validity to be transformed into irrebuttable presumptions with exceptions. An
irrebuttable presumption means just that, irrebuttably
presumed. Unless an exception applies, the registration owner is conclusively
presumed to be the owner of the mark on the goods identified in the
registration and the trademark is conclusively presumed valid,
regardless of what evidence is introduced at trial, the actual truth or past
legal errors in getting to an incontestable status.

The
aforementioned statute is Title 15 of the United States Code, Section 1065 (15
USC 1065). Section 1065 is entitled Incontestability of right to use mark under
certain conditions. In pertinent part the statute reads as follows:

Except on a
ground . . . to cancel . . . under paragraphs (3) and (5) of section 1064
[discussed below] . . ., and except . . . to which . . . a mark . . . infringes
a . . . right acquired under the law of any State . . . continuing from a date
prior to the date of registration . . . the right of the owner to use such
registered mark . . . which . . . has been in continuous use for five
consecutive years subsequent to the date of such registration and is still in
use in commerce, shall be incontestable: Provided, That--

(1) there has been
no final decision adverse to the owners claim of ownership . . . or to the
owners right to register . . . and

(2) there is no
proceeding involving said rights pending in the . . . Trademark Office or in a
court . . . and

(3) an affidavit
is filed with the Director within one year after the expiration of any such
five-year period . . . and

(4) no
incontestable right shall be acquired in a mark which is the generic name for
the goods . . .

In plain English, the status of incontestability involves: (i) eligibility conditions, (ii) a procedure to be
followed and (iii) circumstances excepted from the irrebuttable
presumptions.

In essence, for a registration to be eligible for incontestability status
there must be a five-year period preceding the filing of an
affidavit/declaration (discussed below) during which:

A.the owner of the
mark continuously used the mark; i.e., during these five years, there were no
interruptions by the owner in selling the goods and/or services listed in the
registration with the good and/or services being properly branded with the mark
AND

B.there were no
legal proceedings challenging ownership and/or validity of the mark.

There
is a procedure to be followed. The status of incontestability does not happen
automatically. An affidavit, now a declaration, needs
to be filed with the US Trademark Office, reviewed and approved. In the
affidavit/declaration, the registration owner swears under the penalty of
perjury to five years of continuous use and no legal challenges. Today,
everything is done by the internet. The affidavit is prepared and
electronically filed at the website for the US Trademark Office. For
do-it-yourselfers, the links are, as may be applicable:
https://teas.uspto.gov/postreg/s08n15 OR https://teas.uspto.gov/postreg/sect15
.

Lastly,
there are exceptions to getting the irrebuttable presumptions that flow from
incontestable status. These exceptions are as follows:

A.
There is a senior common law user and only in the area of use at the time of
registration by the senior common law user, as well a buffer zone for normal
expansion;

B.
The registration owner allows the mark to be genericized as the common name for
a product or service; e.g., aspirin, escalator, thermos and perhaps, GOOGLE
(GOOGLE being generic puts shivers in a spinal cord and a ruling by the United
States Supreme Court is awaited (cert. granted);

C.
The Registrant practiced fraud on the Trademark Office and/or used the mark in
a manner to misrepresent the goods (i.e., paragraph (3) of Section 1064 with
simplification) OR

D.
The Registrant engaged in uncontrolled licensing and/or acquiescence of use by
others so as not to maintain quality control (i.e., paragraph (5) of section
1064 with simplification.)

Conclusions

In
conclusion, the conclusive presumptions that flow from incontestability can
make the difference in winning on the issues of ownership and validity in an
infringement lawsuit. If eligible, the cost-benefit analysis weighs in favor of
troubling to file a Section 15 affidavit/declaration. There is a reported
widespread failure by trademark registration owners to elevate their
registrations to incontestable status because of ignorance by registration
owners of incontestablity.

About
the Author

This
article was written by Howard Leslie Hoffenberg, Esq. of the IP and Business
Law Offices of Howard L. Hoffenberg, Esq. (Los Angeles, California.) You are
invited to call to 310-670-5825 to discuss the suitability of making an
appointment with Howard Hoffenberg. For more information, visit
howardhoffenberg.com, howardlhoffenberg, howardlesliehoffenberg and ipcounselor.com.